Acquiring Your Intellectual Property Rights

By tailoring a unique approach to each individual case, by taking into consideration our client’s interests and concerns, and by regularly keeping them informed about all phases of proceedings, we strive to meet the client’s expectations and do our best to assist them in acquiring their intellectual property rights.

We assist and represent our clients in trademark, design and patent proceedings, and in the subsequent defense or enforcement of their IP rights. We also provide services related to copyrights and domains. Our services include conducting availability searches, patent status checking, patent drafting, advice on the registration of trademarks and designs, filing trademark, design and patent applications, counseling on the scope of protection, post-registration monitoring, portfolio management and the enforcement of IP rights.

We represent our clients before the Slovenian Intellectual Property Office (SIPO) and Slovenian courts, before the International Bureau of the World Intellectual Property Organization (WIPO), before the European Union Intellectual Property Office (EUIPO) and before the European Patent Office (EPO). Our firm’s lawyers are also highly qualified experts in trademark, design and patent protection in the countries of the former Yugoslavia (Croatia, Bosnia and Herzegovina, Serbia, Macedonia, Montenegro and Kosovo).

Trademarks

Almost anything can be registered as a trademark: words, logos, shapes and colors, or any combination of these elements, and even sounds and smells. Although there are infinite possibilities regarding what to use or register as a trademark, it is quite common in everyday life that the trademarks of different owners conflict with each other, either in the market or in the trademark register. Use of a similar mark or even an identical mark is not uncommon. Sometimes such conflicts occur unintentionally, but are often deliberate. Well-known brands that enjoy a good reputation among consumers frequently become targets of trademark abuse.

Our services include:

conducting availability searches;

advising on trademark registration;

counseling on the scope of protection;

filing trademark applications with the SIPO, WIPO, EUIPO and the national IP offices of the countries of the former Yugoslavia;

filing responses to provisional refusals;

filing oppositions, cancellation requests and invalidity requests;

representing clients before the courts, administrative bodies and in alternative dispute resolution proceedings concerning all IP matters; and

It is extremely important to protect a brand as early as possible because a registered trademark often constitutes the most valuable asset of a company and a powerful tool in the event of trademark infringement. By acquiring a trademark registration, you protect your rights, and inform competitors that a particular sign is no longer available for use by others.

An image is not simply a trademark, a design, a slogan or an easily remembered picture. It is a studiously crafted personality profile of an individual, institution, corporation, product or service.

Daniel J. Boorstin

an American historian at the University of Chicago

The trademark registration procedure is relatively inexpensive, particularly compared wit the potential costs and risks that may arise if your brand is not protected in a timely manner. Only the owner of a registered trademark has the exclusive right to use or license their trademark, and may prevent any unauthorized use by others. Moreover, in the evnt of infringement, a trademark owner is in a better position to claim damages from the infringer, compared with someone who has not obtained trademark protection.

Before starting a business, launching a new product or at least before filing a trademark application, it is advisable to search relevant trademark registers to learn if there are any obstacles to registration (earlier identical or similar trademarks). Such searches should be conducted by professionals with trademark experience, who can evaluate the search results and provide valuable advice concerning follow-up steps.

By conducting preliminary availability searches, many problems can be avoided at the very outset.

If the search results are encouraging, trademark protection should be sought in all those territories where the trademark will be used. There are three options for acquiring trademark protection in the European Union: by applying for a national trademark, an international trademark, or a Community trademark. Costs of registration depend on the number of classes of goods and services according to the Nice calssification, and on the choice of territories. We represent our clients in all trademark proceedings before the SIPO, WIPO and EUIPO.

After registering the trademark, it is important to monitor its status in all territories of interest to ensure that no attempt is made to register an identical or similar mark. Early action is always the best strategy, and protects you from subsequent protracted and expensive legal proceedings.

A great trademark is appropriate, dynamic, distinctive, memorable and unique.

Primo Angeli

designer and artist

Companies that register Intellectual Property Rights have a 29% higher revenue per employee, have a larger number of employees and pay wages that are on average 20% higher.

Source: The European Observatory on Infringements of Intellectual Property Rights and the European Patent Office have carried out an EU-wide study on the contribution of intellectual property rights (IPRs) to the EU economy.

Patents

People often have good ideas with a great deal of potential to evolve into valuable inventions, and subsequently into valuable patents if properly elaborated. Merely having a good idea does not bring profit. In order to benefit from your ideas, you should materialize them, i.e. transform them into the appropriate form of intellectual property right such as a patent.

Our services include:

counseling on patent matters;

patent drafting;

filing and prosecuting patent applications directly with the SIPO, European Patent Office (EPO), WIPO and via our network of trusted foreign patent agents with national offices;

validations of European patents in Slovenia and via our network of trusted foreign patent agents in the countries of the former Yugoslavia;

Protecting your inventions and defining the best approach for acquiring the maximum protection is essential, regardless of the size or nature of your business.

Patents can provide individuals and companies with great value and an increased return on investment made in the development of a new technology or product. With a properly elaborated patent strategy, patents can keep others off the market. A patent is an exclusive right, and provides its owner with the right to prevent others from exploiting a patented technology or product. Through licensing or selling patented products, a company can achieve higher profit margins and expand its market share. Your patents may prove to be of considerable interest to an enterprise with whom you are negotiating. Patents can thus increase your negotiating power. Patents can give your company credibility. Business partners, investors and shareholders may perceive patent portfolios as proof of a high level of expertise, specialization and technological capacity within your company.

Why file a patent?

keep others off the market;

restrict competitors;

generate revenue from licenses or sales;

increase negotiating power;

give a company credibility;

achieve higher profit margins; and

expand market share.

The patent system has secured to the inventor for a limited time exclusive use of his inventions, and thereby added the fuel of interest to the fire of genius in the discovery and production of new and useful things.

Abraham Lincoln

speech in 1860

When deciding whether to protect your inventions through the patent process, the decision should therefore be made with an intelligent strategy that aligns business interests for implementing the technology with a wide range of options in how, where, and when patent protection should be sought.

Drafting a good patent application and, subsequently, obtaining a good patent that will ensure its owner the best possible protection for their invention through the patent grant process, is not an easy job. The patent process is not inexpensive. However, good solutions often go unpatented because of misconceptions about patents or intimidation about the associated cost. For those who are not familiar with patents and the patent process, the decision whether or not to file a patent application can be very demanding and even stressful. Our team of dedicated patent attorneys, with experience in different technical fields, can help you make the right decisions.

A patent confers on its owner the right to prevent others from making, using or selling a patented invention. Having a patent does not automatically mean that the owner can use his patented invention. The patents of different owners can be interconnected with each other and, by exploiting your patent, you may be infringing on someone else’s patent. Cross-licensing is one way of resolving this problem.

In order to acquire patent protection, certain criteria must be met. The invention must be new, it must involve an inventive step and it must have industrial applications. Novelty is considered on a global level, i.e. an invention is new if it was not available to the public anywhere before the filing date. An invention involves an inventive step if it is not obvious to a person skilled in the art. An invention is deemed to have industrial applications if it can be made or used in industry

Not every invention is patentable, even if it is a novelty. An invention must relate to a technical solution for a certain technical problem. Thus, discoveries, scientific theories, rules or methods for performing mental acts, mathematical methods, business methods and aesthetic creations are not patentable.

In reality we are all inventors.

Richard and Joseph Fuisz

From an interview in the magazine Vzgoja, December 2014

Patents have territorial, time-related and substantive limitations. Patents are valid only in those countries where you apply for a patent and a patent is granted. In most countries, the duration of a patent’s validity is limited to 20 years, with the exception of patents for pharmaceuticals and plant protection products, for which the validity can be extended for up to 5 years. The scope of the protection is defined with the claims.

Industrial Designs

A wide range of products, from non-expensive to luxury products, can be registered as a design. Registered designs protect the appearance of products as a whole or a part thereof. In general, a design is used to protect products in industries where appearance is important. The cost of acquiring a registered design is not high compared to a patent.

Our services include:

advising on registration of a design;

counseling on the scope of protection;

filing design applications with the SIPO, WIPO, EUIPO and national IP offices of the countries of the formed Yugoslavia; and

Design is the fundamental soul of a human-made creation that ends up expressing itself in successive outer layers of the product or service.

Steve Jobs

2005

There is no doubt that a registered design presents a valuable commercial asset for a business. The design registration procedure is quick, simple and cost-effective. A registered Community design is, for example, published and registered within a week, while in Slovenia it takes about a month to obtain a registered design. In those countries where national IP offices perform a novelty and individual character check, the registration procedure is longer. We represent our clients in all proceedings before the SIPO, WIPO and EUIPO.

When seeking a design registration, it is advisable to consult professionals who can advise you whether a product is even eligible for design registration, and who know how to present the appearance of a product in a design application in order to obtain the broadest possible protection.

With design registration, you obtain exclusive rights to produce, advertise and sell your product in the market. The owner of a registered design can also license its product, and they are in a much better position to prevent infringers from copying their product, compared with those who fail to ensure design protection.

An enterprise’s most vital assets lie in its design and other creative capabilities.

Kun-Hee Lee

Samsung chairman, 2006

It is the owner’s responsibility to monitor whether their design has been copied or used in the market without their authorization. If that happens, the owner should seek the assistance of legal experts, specializing in the field of intellectual property rights, who will advise them which legal measures can be taken against the infringer.

Design protection might still be overshadowed by trademark and patent protection, but more and more companies are becoming aware of the importance of registered designs. The number of companies that include designs in their IP portfolios as an additional means of protection and enforcement of their rights is increasing.

Copyrights

Copyright protection is essential for promoting human creativity and cultural diversity. Copyrights may also serve as valuable assets in globally important industries such as computer software, publishing, movies and the music industry.

Our services include:

advising on the protection of copyrights;

arranging registration of creative works before the Slovenian Authors Agency;

Copyright protection is granted for creative works in the domain of literature, science and art. In Slovenia, these works are protected automatically from the time the work is first created. In most cases, copyright protection lasts for the entire life of the author and well beyond. Nevertheless, it is advisable to register these works in the copyright registry with the Slovenian Authors Agency, as registration creates the legal presumption that the creative work is actually copyrighted and that the applicant is the legitimate holder of the material copyrights. Our team of professionals is dedicated to achieving the best possible protection of clients’ copyrights and to enforcing these rights whenever necessary.

A copyright gives its holder several exclusive material rights, including the right to reproduce the work, the right to distribute copies of the work, the right to communicate the work to the public, and the right to transformation and/or adaptation of the work.

Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.

United Nations

Universal Declaration of Human Rights

Give Us a Call

ITEM team consists of experienced and dedicated intellectual property lawyers and experts, who work closely together in order to provide high-quality, client-focused services. We strive to handle the entrusted matters with excellence, diligence and creativity.